The Second Circuit handed down an opinion in TCA Television v. McCollum earlier this week holding that a play’s inclusion of Abbott and Costello’s famous “Who’s on First?” routine was not transformative fair use. Given how expansive transformativeness has become lately, especially in the Second Circuit, the opinion is somewhat surprising. What’s more, it’s not clear that the appellate court even needed to reach the fair use issue since it held for the defendants on the alternate ground of lack of ownership. If anything, it appears that this particular panel of judges went out of its way to push back on—and bring some much-needed sanity to—transformative fair use doctrine in the Second Circuit.

The play at issue, “Hand to God,” features an introverted boy named Jason who communicates through his alter ego sock puppet named Tyrone. In order to impress a girl, Jason and Tyrone perform over one minute of the “Who’s on First?” routine, with Jason as Abbott and Tyrone as Costello. The plaintiffs, including Abbott and Costello’s heirs, sent the defendants, producers and author of the play, a cease and desist letter. When the defendants refused to remove the scene from the play, the plaintiffs sued for copyright infringement. On the first fair use factor, which looks at the “purpose and character of the use,” the district court held that Jason/Tyrone’s almost-verbatim recitation of the heart of the “Who’s on First?” routine was “highly transformative”—so transformative that it was “determinative” of fair use.

The standard for transformativeness, which comes from the Supreme Court’s opinion in Campbell v. Acuff-Rose, looks at “whether the new work merely ‘supersede[s] the objects’ of the original creation” or whether it “instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[.]” The district court held that “Hand to God” used “Who’s on First?” for a different—and thus transformative—purpose, namely, to proffer a “darkly comedic critique of the social norms governing a small town in the Bible Belt.” While Abbott and Costello’s routine was standard vaudevillian fare, the district court reasoned that the play used it for a more dramatic purpose.

The Second Circuit rejected the district court’s conclusion, pointing out that “the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from that for which it was created.” In other words, it’s not enough for “Hand to God” to have a different purpose than “Who’s on First?” The issue is whether “Hand to God” used “Who’s on First?” for a different purpose than Abbott and Costello used the routine. The Second Circuit held that it did not: “The Play may convey a dark critique of society, but it does not transform Abbott and Costello’s Routine so that it conveys that message.”

The disagreement between the district court and the Second Circuit is subtle, yet important. The lower court determined that having Jason/Tyrone recite the “Who’s on First?” routine was transformative because it gave the audience a glimpse into Jason’s psyche. Whereas Jason is seemingly kind and soft-spoken on the surface, it becomes clear through his sock puppet persona Tyrone that there’s much murkiness beneath. And to the extent that Jason/Tyrone’s recitation of “Who’s on First?” is comedic, the district court thought that the “audience laughs at Jason’s lies, not, as the Plaintiffs claim, simply the words of the Routine itself.”

By contrast, the Second Circuit held that this “reasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play.” Moreover, the district court failed to identify how the “defendants’ extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants’ use.” The Second Circuit’s approach here recognizes that fair use is premised upon necessity, that is, there needs to be a justification for copying the specific original work. In this case, the point of having Jason/Tyrone recite “Who’s on First?” was to demonstrate that Jason was lying when he later claimed to have written it. But that could have been accomplished by using any recognizable work.

As the Second Circuit noted, “the particular subject of the lie—the Routine—appears irrelevant to that purpose.” And as such, the defendants’ use of “Who’s on First?” had “no bearing on the original work” and lacked the required “justification to qualify for a fair use defense.” This reasoning sounds very close to requiring the copyist to comment upon the original, a principle that, for better or worse, was rejected by the Second Circuit in Cariou v. Prince. Indeed, the appellate panel here mentioned Cariou, noting that, “although commentary frequently constitutes fair use, it is not essential that a new creative work comment on an incorporated copyrighted work to be transformative.” Nevertheless, the Second Circuit easily distinguished Cariou since there the artist at least changed the original work.

The Second Circuit’s opinion is a refreshing reminder that, despite what some would prefer, not everything arguably-transformative is transformative fair use. If the defendants wanted to use a copyrighted work within the play, the proper course would have been to negotiate a license or to not use the work at all. And given the way “Who’s on First?” was used within the play, there was certainly no shortage of alternatives that could have sufficed. It’s also nice to see that some judges in the Second Circuit are skeptical of cases like Cariou, which the panel here referred to as “the high-water mark of our court’s recognition of transformative works.” The panel also rightfully noted that an overly-expansive view of transformativeness threatens a copyright owner’s exclusive right to prepare derivative works. And the fact that this push-back is coming from within the Second Circuit makes it all the more interesting.